UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORP., EDWARDS LIFESCIENCES LLC, AND
`EDWARDS LIFESCIENCES AG,
`
`Petitioners,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-00060
`Patent 8,992,608
`_______________
`
`Before the Honorable NEIL T. POWELL, JAMES A. TARTAL, and ROBERT L.
`KINDER, Administrative Patent Judges.
`
`MOTION FOR PRO HAC VICE ADMISSION OF MARC A. COHN
`
`-1-
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORP., EDWARDS LIFESCIENCES LLC, AND
`EDWARDS LIFESCIENCES AG,
`
`Petitioners,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-00060
`Patent 8,992,608
`_______________
`
`Before the Honorable NEIL T. POWELL, JAMES A. TARTAL, and ROBERT L.
`KINDER, Administrative Patent Judges.
`
`MOTION FOR PRO HAC VICE ADMISSION OF MARC A. COHN
`
`-1-
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), and as authorized in the Patent Trial and
`
`Appeal Board’s (“Board”) Notice of Filing Date Accorded to Petition (Paper 3),
`
`Patent Owner Boston Scientific Scimed, Inc. (“Patent Owner”) respectfully
`
`requests pro hac vice admission of Marc A. Cohn as counsel in this proceeding.
`
`II. GOVERNING LAW
`
`, RULES, AND PRECEDENT
`
`37 C.F.R. § 42.10(c) states:
`
`The Board may recognize counsel pro hac vice during a
`proceeding upon a showing of good cause, subject to the condition
`that
`lead counsel be a registered practitioner and to any other
`conditions as the Board may impose. For example, where the lead
`counsel is a registered practitioner, a motion to appear pro hac vice by
`counsel who is not a registered practitioner may be granted upon
`showing that counsel is an experienced litigating attorney and has an
`established familiarity with the subject matter at
`issue in the
`proceeding.
`
`(37 C.F.R. § 42.10(c).)
`
`Further, the Board’s Notice of Filing Date Accorded to Petition (Paper 3)
`
`states that a motion for pro hac vice admission under 37 C.F.R. § 42.10(c) “shall
`
`be filed in accordance with the ‘Order -- Authorizing Motion for Pro Hac Vice
`
`Admission’ in Case IPR2013-00639” (“IPR2013-00639 Order”). (Paper 3 at 2.)
`
`IPR2013-00639 Order requires the pro hac vice motion to (a) be filed “no sooner
`
`than twenty one (21) days after service of the petition,” (b) “contain a statement of
`
`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`-2-
`
`
`
`during the proceeding,” and (c) be accompanied by a declaration of the individual
`
`seeking to appear attesting to the following:
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`v.
`
`vi.
`
`vii.
`
`viii.
`
`Membership in good standing of the Bar of at least one State or
`the District of Columbia;
`No suspensions or disbarments from practice before any court
`or administrative body;
`No application for admission to practice before any court or
`administrative body ever denied;
`No sanctions or contempt citations imposed by any court or
`administrative body;
`The individual seeking to appear has read and will comply with
`the Office Patent Trial practice Guide and the Board’s Rules of
`Practice for Trials set forth in part 42 of 37 C.F.R.;
`The individual will be subject
`to the USPTO Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
`All other proceedings before the Office for which the individual
`has applied to appear pro hac vice in the last three (3) years;
`and
`Familiarity with the subject matter at issue in the proceeding.
`
`(Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7, at 2-3 (Oct.
`
`15, 2013).)
`
`III.
`
`STATEMENT OF MATERIAL FACTS
`
`Based on the following facts and accompanying Declaration of
`
`Marc A. Cohn in Support of Motion for Pro Hac Vice Admission (Ex. 2009),
`
`Patent Owner submits that a showing of good cause has been made and
`
`respectfully requests pro hac vice admission of Marc A. Cohn as counsel in this
`
`proceeding.
`
`-3-
`
`
`
`1.
`
`On October 12, 2016, Petitioners Edwards Lifesciences Corporation,
`
`Edwards Lifesciences LLC, and Edwards Lifesciences AG (“Petitioners”) filed and
`
`served its Petition for Inter Partes Review of U.S. Patent No. 8,992,608
`
`(“Petition”). (Paper 1.)
`
`2.
`
`On January 23, 2017, Patent Owner filed and served its Preliminary
`
`Response. (Paper 6.)
`
`3.
`
`On March 29, 2017, the Board issued its Decision Instituting Inter
`
`Partes Review. (Paper 7.)
`
`4.
`
`Patent Owner’s lead counsel, Jennifer A. Sklenar, is a registered
`
`practitioner (Reg. No. 40,205). (Paper 4 at 2.)
`
`5.
`
`Patent Owner’s back-up counsel, Wallace Wu, is a registered
`
`practitioner (Reg. No. 45,380). (Id.)
`
`6.
`
`Mr. Cohn is a partner at the law firm of Arnold & Porter Kaye Scholer
`
`LLP. (Ex. 2009 at ¶ 1.)
`
`7.
`
`Mr. Cohn is an experienced litigation attorney. (Id. at ¶ 10.) Mr.
`
`Cohn has been practicing law since 2000 and has extensive experience litigating
`
`patent infringement cases in United States District Courts and the United States
`
`Court of Appeals for the Federal Circuit. (Id.)
`
`8.
`
`Mr. Cohn has participated in numerous patent infringement cases,
`
`wherein he has presented claim construction arguments during Markman hearings,
`
`-4-
`
`
`
`argued motions for summary judgment and motions in limine, conducted
`
`depositions of expert witnesses regarding validity and infringement, and
`
`participated in multiple jury trials. (Id.) By virtue of his patent litigation
`
`experience, Mr. Cohn is well versed in the law regarding claim construction and
`
`obviousness, which are at issue in this proceeding. (Id.)
`
`9.
`
`Mr. Cohn is a member in good standing of the District of Columbia
`
`Bar. (Id. at ¶ 2.)
`
`10.
`
`Mr. Cohn is also admitted to practice and in good standing in the
`
`following United States courts:
`
`
`
`
`
`United States Court of Appeals for the First Circuit
`United States Court of Appeals for the Seventh Circuit
`United States Court of Appeals for the Federal Circuit
`
`(Id. at ¶ 3.)
`
`11.
`
`Mr. Cohn has never been suspended or disbarred from practice before
`
`any court or administrative body. (Id. at ¶ 4.)
`
`12.
`
`Mr. Cohn has never had an application for admission to practice
`
`before any court or administrative body denied. (Id. at ¶ 5.)
`
`13.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Cohn by any court or administrative body. (Id. at ¶ 6.)
`
`-5-
`
`
`
`14.
`
`Mr. Cohn has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
`
`title 37 of the Code of Federal Regulations. (Id. at ¶ 7.)
`
`15.
`
`Mr. Cohn agrees to be subject to the USPTO Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a). (Id. at ¶ 8.)
`
`16.
`
`Mr. Cohn has applied to appear pro hac vice in one other proceeding
`
`before the USPTO in the last three years: IPR2016-00868. (Id. at ¶ 9.) The
`
`USPTO granted Mr. Cohn’s pro hac vice application in IPR2016-00868.
`
`17.
`
`Mr. Cohn has represented Patent Owner and its parent entity, Boston
`
`Scientific Corporation, in many of their patent litigation matters over the years,
`
`including with respect to medical devices. (Id. at ¶ 11.) By virtue of Mr. Cohn’s
`
`long-standing representation of Patent Owner, Mr. Cohn has an established
`
`familiarity with Patent Owner and its business, medical devices, patent portfolio,
`
`in-house counsel, and litigation preferences and objectives. (Id.)
`
`18.
`
`Mr. Cohn also has an established familiarity with the subject matter at
`
`issue in this proceeding, including, inter alia, U.S. Patent No. 8,992,608 (the “‘608
`
`patent”), its prior art, and the field of transcatheter aortic heart valves. (Id. at ¶ 12.)
`
`Mr. Cohn is counsel and technical lead for Patent Owner in the related district
`
`court litigation Boston Scientific Corp. et al. v. Edwards Lifesciences Corp., Case
`
`-6-
`
`
`
`No. 1:16-cv-00275-SLR-SRF (D. Del.). (Id.) That litigation also involves the
`
`‘608 patent and overlaps with this proceeding on a number of significant issues,
`
`including the technology disclosed and claimed in the ‘608 patent, the
`
`interpretation of the ‘608 patent’s claims, and the validity of the ‘608 patent. (see
`
`Ex. 2009 at ¶ 12.) As counsel, Mr. Cohn has been heavily involved in all
`
`substantive decisions, including forming Patent Owner’s claim construction,
`
`infringement, and validity positions. (Ex. 2009 at ¶ 12.)
`
`19.
`
`If admitted pro hac vice in this proceeding, Mr. Cohn expects to
`
`participate in depositions and potentially present part of the oral argument before
`
`the Board, if requested by either party. (Id. at ¶ 13.)
`
`IV.
`
`STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
`
`First, this Motion is timely because it will be filed more than twenty-one
`
`days after service of the Petition, which occurred on October 12, 2016. (Paper 1;
`
`see Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7, at 2-3
`
`(Oct. 15, 2013).)
`
`Second, as required by IPR2013-00639 Order, this Motion is accompanied
`
`by the Declaration of Marc A. Cohn in Support of Motion for Pro Hac Vice
`
`Admission. (Ex. 2009; see Unified Patents, Inc. v. Parallel Iron, LLC,
`
`IPR2013-00639, Paper 7, at 2-3 (Oct. 15, 2013).)
`
`-7-
`
`
`
`Third, the Board may recognize counsel pro hac vice during a proceeding
`
`upon a showing of good cause, subject to the condition that lead counsel be a
`
`registered practitioner. (See 37 C.F.R. § 42.10(c).) Patent Owner’s lead and
`
`back-up counsel are registered practitioners. Further, the foregoing facts and
`
`accompanying Declaration of Marc A. Cohn in Support of Motion for Pro Hac
`
`Vice Admission (Ex. 2009) demonstrate that good cause exists to admit Mr. Cohn
`
`pro hac vice in this proceeding.
`
`Mr. Cohn has extensive experience litigating patent infringement cases
`
`through trial and appeal. (Id. at ¶ 10.) Mr. Cohn is well versed in the law
`
`regarding claim construction and obviousness, which are at issue in this
`
`proceeding. (Id.) Mr. Cohn has an established familiarity with Patent Owner and
`
`its business, medical devices, patent portfolio, in-house counsel, and litigation
`
`preferences and objectives. (Id. at ¶ 11.) Mr. Cohn also has an established
`
`familiarity with the subject matter and issues of this proceeding, including the
`
`technology disclosed and claimed in the ‘608 patent, the interpretation of the ‘608
`
`patent’s claims, the validity of the ‘608 patent, the ‘608 patent’s prior art, and the
`
`field of transcatheter aortic heart valves. (Id. at ¶ 12.) In regards to the related
`
`district court litigation, Mr. Cohn has, as counsel and technical lead, been heavily
`
`involved in all substantive decisions, including forming Patent Owner’s claim
`
`construction, infringement, and validity positions. (Id.) By virtue of Mr. Cohn’s
`
`-8-
`
`
`
`relationship with Patent Owner, knowledge of Patent Owner’s litigation
`
`preferences and objectives, and deep understanding of the subject matter and
`
`significant issues of this proceeding and the related district court litigation,
`
`Mr. Cohn is well-suited to represent Patent Owner in this proceeding and at oral
`
`argument and Patent Owner has a substantial need for Mr. Cohn’s pro hac vice
`
`admission and involvement in this proceeding.
`
`For the foregoing reasons, good cause exists for the Board to admit Mr.
`
`Cohn pro hac vice in this proceeding. (See 37 C.F.R. 42.10(c) (“[W]here the lead
`
`counsel is a registered practitioner, a motion to appear pro hac vice by counsel who
`
`is not a registered practitioner may be granted upon showing that counsel is an
`
`experienced litigating attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.”).)
`
`V.
`
`PETITIONER DOES NOT OPPOSE THIS MOTION
`
`Counsel for Patent Owner has notified counsel for Petitioner of its intention
`
`to file this Motion. Counsel for Petitioner does not oppose this Motion.
`
`VI. CONCLUSION
`
`For the foregoing reasons and the reasons contained in the attached
`
`Declaration of Marc A. Cohn in Support of Motion for Pro Hac Vice Admission
`
`(Ex. 2009), Patent Owner respectfully requests pro hac vice admission of
`
`Marc A. Cohn as counsel in this proceeding.
`
`-9-
`
`
`
`Dated: May 9, 2017
`
`Respectfully submitted,
`
`/Jennifer Sklenar/
`Jennifer A. Sklenar (Reg. No. 40,205)
`Wallace Wu, Ph.D. (Reg. No. 45,380)
`ARNOLD & PORTER KAYE
`SCHOLER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel:
`(213) 243-4000
`Fax:
`(213) 243-4199
`
`Attorneys for Patent Owner Boston
`Scientific Scimed, Inc.
`
`-10-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing MOTION FOR PRO
`HAC VICE ADMISSION OF MARC A. COHN was served on May 9, 2017 to the
`following Counsel for Petitioner via e-mail:
`
`Gregory S. Cordrey, Lead Counsel
`Jeffer Mangels Butler & Mitchell, LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`gcordrey@jmbm.com
`
`Brian Egan
`Morris, Nichols, Arsht & Tunnell LLP
`1201 North Market Street
`Wilmington, DE 19899
`began@MNAT.com
`
`Catherine Nyarady
`Paul, Weiss, Rifkind, Wharton & Garrison LLP
`1285 Avenue of the Americas
`New York, NY 10019
`cnyarady@paulweiss.com
`
`Attorneys for Petitioners Edward Lifesciences Corp., Edwards Lifesciences
`LLC, and Edwards Lifesciences AG
`
`/Jennifer A. Sklenar /
`Jennifer A. Sklenar (Reg. No. 40,205)
`ARNOLD & PORTER KAYE
`SCHOLER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel:
`(213) 243-4000
`Fax: (213) 243-4199
`
`-i-
`
`
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